Our attorneys have decades of experience representing software companies, from startups to national and international software and service providers. We represent both licensors and licensees in the drafting and negotiating of software license and subscription agreements. We also assist our software clients in securing intellectual property rights and protecting those rights through litigation. We have also worked with numerous institutions on their acquisition of key elements of their information technology systems, including critical enterprise and human resources software.

With regard to patent prosecution, we have experience in a variety of software-based applications including encrypted vehicle-to-vehicle communications, anti-virus software that monitors computer systems by continuously generating cognitive fingerprints, back-end software systems for collaborative, real-time, simultaneous software development and big data analysis, and image processing and image recognition software systems. We have continued to successfully issue numerous software patents despite multiple patent-eligibility rejections under 35 U.S.C. 101.

We assist our software clients not only with patent prosecution and licensing, but also with:

  • Establishing ownership of work product created by employees and independent contractors
  • Copyright registration
  • Compliance with data privacy regulations
  • Website Terms of Use and related policies and notices
  • Patent and trademark portfolio building, including strategy, counseling and prosecution
  • Litigation and post-grant proceedings at the USPTO
  • Counseling on licensing and other IP-based transactions

Examples of our work include:

  • Representing the developer of a comprehensive Retail Management and Point of Sale software-as-a-service offering in protection and licensing of its software, as well as branding and trademark protection.
  • Representing two state judicial systems in licensing enterprise software to manage their operations.
  • Represented a company that provides software for intelligent video monitoring products that sued larger competitor.
  • Drafting a form of Software License agreement for the developer of Student Housing software and assisting with the transition from an on-premises license to a cloud-based service.
  • Serial representation of multiple private colleges and universities in at least five states in negotiating licenses of enterprise finance and human resources software and associated implementation services.
  • Represented large provider of IT management solutions in lawsuits in U.S. District Courts for the Eastern District of New York and the Northern District of California.
  • Resolving an ownership dispute for the developer of institutional laundry management software, helping the developer grow and sell its business, buy it back, then finally sell it again.
  • Defended a software company in a patent case brought by a competitor in U.S. District Court for the Eastern District of Texas.
  • Representing the developer of a cloud-based supplier information management system in preparing and negotiating its software-as-a-service agreement with multiple entities, including private and state-run educational institutions.
  • Represented many software companies over the years in patent litigations brought by numerous non-practicing entities.
  • Represented the developer of an encrypted vehicle-to-vehicle communications software system in selling its business to a multinational semiconductor and telecommunications equipment and software provider.

Firm Highlights

Publication/Podcast

PPP: How is Maine Faring?

Originally enacted on March 27, the Paycheck Protection Program (PPP) offers loan support and (potentially) loan forgiveness to qualifying small businesses – generally defined as those with not more than 500 employees. According to...

Blog

IRS Issues New Guidance on CARES Act Retirement Plan Distributions and Loans

The IRS recently issued Notice 2020-50 , which expands relief provided for retirement plan distributions and loans under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act). Distributions Under the CARES Act, a...

Event

2020 OHRP Exploratory Workshop

Health care attorney Emily Fogler will be presenting at the 2020 OHRP Exploratory Workshop in the third session, discussing sharing responsibilities and protecting participants - redefining roles in the single IRB era. Stay tuned...

Blog

IRS Allows Tax-Advantaged Leave Donation to COVID-19 Relief Organizations

Under new guidance, the IRS will give favorable tax treatment to employees who donate leave to COVID-19 relief organizations. In IRS Notice 2020-46 , the agency announced that employees who donate paid leave for...

News

Paycheck Protection Program Focuses on Short-Term and Misses Long-Term Damages

On June 8, the Portland Press Herald published an article, "Revamped emergency loan program remains a short-term fix," discussing the Paycheck Protection Program's (PPP) extended deadlines and loosened restrictions, but lack of solutions to...

Matter

Political Service

Mayor, City of Portland (2005-2006) Portland City Council (2002-2008) Portland City Council Transportation Committee, Chair (2002-2005) Jetport Master Planning Committee, Chair (2005-2007) Greater Portland Transit District, Trustee (2002-2005) Narrow Gauge Rail Alignment Committee, Chair...

Publication/Podcast

FDA Issues Guidance on IRB Review of Non-Emergency Individual Patient Expanded Access Requests for Investigational Drugs and Biological Products to Treat COVID-19

Prompted by a substantial increase in requests for individual patient access to investigational drugs and biologics to treat COVID-19, the U.S. Food & Drug Administration (“FDA”) issued guidance on June 2, 2020 that outlines...

Blog

Financial Institutions . . . In the News

Town & Country Federal Credit Union to host virtual money conference ( Mainebiz 6.23.2020) Connected Credit Union and Winslow Community Federal Credit Union ’s merger is effective June 27 and will be known as...

News

Verrill Welcomes Esteemed Corporate and Securities Attorney Edward Rosenthal

(June 10, 2020) – Verrill is pleased to welcome corporate and securities attorney Edward Rosenthal to the firm as a member of the Business Law Group. Rosenthal brings with him more than 40 years...

Matter

Community Service

Portland Regional Chamber, Chair (2012-14) Trustee (2008-16; 2019- present) Portland Community Chamber of Commerce, President (2019- ) Trustee (2016-present) Maine State Chamber of Commerce, Trustee (2009 - present) Project Green Schools, Advisory Trustee (2017-present...